The US Patent Office just (in 2017!) awarded IBM a patent over out-of-office email

On January 17, 2017 — yes, 2017 — the USPTO granted Patent 9,547,842 to IBM: "Out-of-office electronic mail messaging system."

It was originally filed in 2010, after decades during which companies — including IBM! — had created and fielded out-of-office email systems that constitute invalidating prior art.

The patent was granted despite the groundbreaking 2014 ruling in Alice v. CLS Bank, which was supposed to end the practice of allowing companies to patent obvious things merely because they could be "implemented on a generic computer." The patent examiner tried to apply this standard to one small element of IBM's application, but IBM's lawyers talked their way out of even this concession.

If and when IBM's patent is re-examined, the Alice standard will be the deciding factor — which may be why IBM is lobbying so ferociously for Congress to pass legislation undoing Alice.

IBM's '842 patent is the recipient of this month's Electronic Frontier Foundation Stupid Patent of the Month award.

At one point, the examiner did reject some of the application's claims under Section 101 of the Patent Act (which is the statute the Alice decision applies). But IBM overcame the rejection simply by arguing that the patent's method was implemented in computer hardware. In January 2013, IBM noted that "it was agreed [between IBM and the patent examiner] that the rejection … under 35 U.S.C. § 101 could be overcome by reciting that a hardware storage device stores computer readable instructions or program code." Even if that was a reasonable response in 2013, it certainly was not after Alice. Yet the Patent Office never revisited the issue. We have submitted multiple rounds of comments (1, 2, 3, and 4) to the Patent Office urging it to be more diligent in applying Alice.

Even if the claims of the '842 Patent were non-abstract, they still should have been rejected as obvious. We've written before about how the Patent Office does a terrible job of finding and considering real-world evidence when reviewing patents. In fact, it seems to operate in an alternative universe where patents themselves provide the only evidence of the state of the art in software. The prosecution that led to the '842 Patent is a stark illustration of this.

Stupid Patent of the Month: IBM Patents Out-of-Office Email
[Daniel Nazer/EFF]